美国BIR律师事务所讲座课件3.ppt

Preserve the Right of Priority from a Foreign Patent Application A PCT application may claim priority from a foreign patent application. To preserve the right of priority, the PCT application must be filed within 12 months of the filing date of the foreign priority application. National Stage Choices in the U.S. By-Pass Continuation Application Under 35 USC §111(a) PCT National Phase Application Under 35 USC §371(c) National Stage Requirement (1) fees (2) a copy of the international application, and a translation into the English language of the international application (3) amendments, if any, to the claims in the international application (4) an oath or declaration of the inventor Bypass Continuation Application A bypass continuation application is a U.S. patent application that claims the benefit of the filing date of an earlier PCT application designating the U.S., that did not enter the national stage. Continuation  (1) WRITTEN APPLICATION (2) CONTENTS. Such application shall include- (A) a specification (B) a drawing; and (C) an oath by the applicant (3) Fees Advantages of the Bypass Route May add new matter (i.e., filing as a CIP application) The translation of PCT application does not need to be a literal translation. However, in order to obtain the benefit of the filing date of the PCT application, the claims of the continuation application must find support in the PCT application. Advantages of the Bypass Route May be filed anytime as long as the PCT application is pending May avoid prosecution effect by the international search report Disadvantage of the Bypass Route Subject to restriction practice, rather than unity of invention standard. In theory, an examiner cannot require an election between a product and a process of use of that product in a national phase application Preliminary Amendment Recommended for claims Preliminary Amendment recommended for specifications, subsequent to the filing date * * * * * * * * * * * *